Appeal No.2001-2506 Page 7
Application No. 08/415,658
depository. See 37 CFR 1.803. Because all of the claims require the deposited
pSM651 plasmid, deposit of that plasmid is required in order for the claims to
meet the enablement requirement of 35 U.S.C. § 112, first paragraph.
CONCLUSION
The prior art of record fails to teach or suggest processes for the
production of D-I-amino acids using microorganisms transformed with the
pSM651 plasmid, having the deposit number CBS 203.94, thus the rejections
under 35 U.S.C. § 103(a) are reversed. In addition, Claims 2 and 3 are subject
to a new ground of rejection under 35 U.S.C. § 112, fourth paragraph.
This decision contains a new ground of rejection pursuant to 37 CFR
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg.
53,131, 53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant(s), WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so
rejected or a showing of facts relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which
event the application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b)
by the Board of Patent Appeals and Interferences upon the same
record. . . .
No time period for taking any subsequent action in connection with this
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